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BIO IPCC Spring Conference Program Announced

February 25, 2015
BIO’s 2015 IP Counsels Committee Spring Conference & Meeting will be held April 15-17 in St. Louis, Missouri, at the Four Seasons St. Louis Hotel.

The biannual conference offers timely, relevant educational sessions on the latest issues in the biotech IP sector, informal networking events designed to promote discussion and foster relationships among industry colleagues, and practical tips for attendees to use the next day.

Attendees will hear from the foremost experts in biotech IP and attend sessions on issues such as the American Investment Act, claim construction and case law updates, biopharma patent licensing, and inter-partes review.

Attendees can register for the BIO IPCC-Spring Conference here.

Here’s a look at some of the featured sessions at this April’s event:

Pre-Conference Workshop:  Can Congress Fix the Patent Law Mess?

Sponsored by: McDonnell Boehnen Hulbert & Berghoff LLP

Moderator:  Kevin Noonan, Partner, McDonnell Boehnen Hulbert & Berghoff LLP


  • Janet Gongola, Patent Reform Coordinator, U.S. Patent & Trademark Office

  • Len Smith, Vice President & General Counsel, Heliae

  • Don Zuhn, Partner, McDonnell Boehnen Hulbert & Berghoff LLP

Chairman’s Welcome & Breakfast:  Strategic Aspects of the New EU Unified Patent Court

Sponsored by: WilmerHale

The European patent system is about to undergo long anticipated and dramatic changes with the advent of the Unified Patent Court and unitary patent on the near-term horizon.  The practical, strategic and tactical aspects of the Unified Patent Court for both patentees and accused infringers will be explored, including preparing for the UPC and the unitary patent from both a filing and licensing perspective.  Strategies for opting in or staying out of the UPC, forum shopping from both the patentee and accused infringer standpoint, and deciding whether to seek unitary effect for patents will also be covered.

Moderator: David A. Manspeizer, Partner, WilmerHale


  • Kerry Flynn, Vice President & Chief IP Counsel, Vertex Pharmaceuticals

  • Anthony Trenton, Partner, WilmerHale

AIA Today

Sponsored by: Seed Intellectual Property Law Group PLLC

Beyond  IPR and PGR, the AIA included other major changes to U.S. patent law, including a diminished grace period, an expanded universe of prior art, prior user rights and trade secrets, third party submissions, derivation proceedings, and supplemental examination.  The practical implications of these other aspects of the AIA to date, as well as strategic considerations, will be explored.

Moderator: Samuel E. Webb, Partner, Seed Intellectual Property Law Group PLLC


  • Jeffrey C. Pepe, Partner, Seed Intellectual Property Law Group PLLC

Claim Construction Now and Other Case Law Updates

Sponsored by: Seed Intellectual Property Law Group PLLC

A brief look at claim construction and the potential impact the Supreme Court decision in Teva v. Sandoz will be explored.  In addition, insights into how a change in claim construction might intersect with other issues, such as assessing validity in the context of inducement of infringement (Commil v. Cisco), divided infringement (Akamai v. Limelight), opinions of counsel, and the broadest reasonable interpretation used by the PTAB.

Moderator: Michael P. Hogan, Partner, Seed Intellectual Property Law Group PLLC


  • James Sterner, Corporate Counsel Breckenridge Pharmaceutical, Inc.

Luncheon Keynote

Speaker: Robert G. Spelbrink, Special Agent, FBI Washington Field Office, Strategic Partnership Program

Rethinking Biopharma Patent Licenses

Sponsored by: Foley Hoag LLP

This panel will discuss current issues in biopharma patent licensing, including the implications of the Supreme Court’s decision to revisit Brulotte v. Thys Co. and how the possible substitution of a rule of reason standard for post-expiration royalties would alter the licensing landscape.  The panel will also address best practices for clarifying the parties’ rights and avoiding costly disputes, including mechanisms for terminating licenses and collaborations, mitigating deal risk, ensuring cost effective dispute resolution, and allocating ownership of intellectual property and biological materials.  In addition, the panel will consider special licensing issues arising under European law.

Moderator: Don Ware, Partner, Foley Hoag LLP.


  • Lesley Stolz, Transactions, Johnson & Johnson Innovation Center

  • Thierry Calame, Partner, Lenz & Staehelin

At the Hop:  DJ’s, (Inter) Parties, and (Patent) Dances

Sponsored by: Foley Hoag LLP

This panel will address current strategic considerations from the perspectives of both the reference product sponsor and the (k) applicant.  Some of those considerations include: whether and when a (k) applicant should file a preemptive IPR attack on reference product patents; whether a (k) applicant should provide a copy of its (k) application to start the patent dance; what legal options the reference product sponsor has if the (k) applicant opts out of the BPCIA dance; when DJ actions are available for use by the reference product sponsor and the (k) applicant; and how the reference product sponsor can best position itself to obtain preliminary injunctive relief in the second-wave litigation.

Moderator: Barbara Fiacco, Partner, Foley Hoag LLP


  • Mark Bowditch, formerly Executive Director of Product Support IP, Sandoz Inc.

Emerging Ethical Dilemmas in Patent Prosecution

Sponsored by: Alston & Bird LLP

The AIA and recent court decisions have resulted in divergent treatment between the courts and PTO of a number of ethical issues such as inequitable conduct, best mode and revival of abandoned cases.  Lack of compliance with applicable standards in the PTO may be without penalty in patent enforcement, but still leave prosecuting attorneys at personal risk.  The panel will discuss the ensuing ethical conflicts.

Moderator: Romy Celli, Partner, Alston & Bird LLP


  • David Hricik, Professor of Law, Mercer University

  • Joe Liebeschuetz, Partner, Alston & Bird LLP